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Licensors of software typically utilize software license agreements providing for their ownership of the licensed software and related IP, as well as restrictions barring licensees from reverse engineering the code at issue.  The scope of protection, of course, depends on the final language of the licensing agreement and disputes can arise when licensees decide to develop similar software in-house, or with a third party.  Indeed, a recent case, Ford Motor Co. v. Versata Software Inc., No. 15-10628 (E.D. Mich. Sept. 7, 2018), tackled some of these issues. 

In this long-running dispute that has been previously dubbed “The World Series of IP cases” by the presiding judge, Oracle America Inc. (“Oracle”) accuses Google Inc. (“Google”) of unauthorized use of some of its Java-related copyrights in Google’s Android software platform. Specifically, Oracle alleges that Google infringed the declaring code of certain Java API packages for use in Android, including copying the elaborate taxonomy covering 37 packages that involves multiple classes and methods.  Google had declined to obtain a license from Oracle to use the Java APIs in its platform or license the same under an open source GPL license; instead it copied the declaring code from the 37 Java API packages (over 11,000 lines of code), but wrote its own implementing code.  Google designed it this way, believing that Java application programmers would want to find the same 37 sets of functionalities in the new Android system callable by the same names as used in Java.

UPDATE: On September 27, 2018, the Supreme Court granted Rimini Street, Inc.’s petition for a writ of certiorari asking the Court to review part of the multi-million dollar damage award against it for costs and resolve an apparent circuit split over whether so-called “non-taxable costs” may be awarded under the Copyright Act (which allows for the recovery of “full costs”).  The question presented is: “Whether the Copyright Act’s allowance of “full costs” (17 U.S.C. § 505) to a prevailing party is limited to taxable costs under 28 U.S.C. §§ 1920 and 1821, as the Eighth and Eleventh Circuits have held, or also authorizes non-taxable costs, as the Ninth Circuit holds.”  On March 4, 2019, the Supreme Court ruled that the term “full costs” in §505 of the Copyright Act is limited to the six categories of taxable costs as specified at 28 U.S.C. §§1821 and 1920.

Earlier this month, the Ninth Circuit issued a noteworthy ruling in a dispute between an enterprise software licensor and a third-party support provider.  The case is particularly important as it addresses the common practice of using automated means to download information (in this case, software) from websites in contravention of website terms and conditions.  Also, the case examines and interprets fairly “standard” software licensing language in light of evolving business practices in the software industry. (Oracle USA, Inc. v. Rimini Street, Inc., No. 16-16832 (9th Cir. Jan. 8, 2018)).

Last month, a New York district court refused to dismiss most of the copyright infringement claims asserted against a website operator based on an allegation that the website linked to an infringing copy of plaintiff’s software stored on a third-party’s servers. (Live Face on Web, LLC v. Biblio Holdings LLC, 2016 WL 4766344 (S.D.N.Y., September 13, 2016)).

The software at issue allows websites to display a video of a personal host to welcome online visitors, explaining the website’s products or services and, ideally, capturing the attention of the visitor and increasing the site’s “stickiness.”  A website operator/customer implements the software by embedding an HTML script tag to its website code to link the website to a copy of the software on the customer’s server or an outside server. When a user’s browser retrieves a webpage, a copy of the software is allegedly stored on the visitor’s computer in cache.